T 1799/21 - Too late is too late

Key points

• The opposition is rejected. The opponent appeals. The Board agrees with the opponent, that claim 1 defines the invention in a too broad manner. 
• "claim 1 is directed to any recombinant [bacteria] strain of the order of Actinomycetales having at least one non-functional gene encoding an enzyme having vanillin reductase (vr) activity" (having a certain sequence)
• A non-functional vanillin reductase enzyme is useful when producing vanillin. 
• " The order of Actinomycetales describes a large group of bacterial strains which inter alia encompass the genus Amycolatopsis and Streptomyces. The recombinant strain of claim 1 is not further characterised besides its origin and the presence of at least one non-functional vr1 to vr5 gene. Claim 1 is in particular silent on the strain's suitability to produce a certain product, for example, vanillin."
• " A matter of particular importance in the present case is the issue of whether or not substantially all recombinant strains defined in claim 1 are capable of producing vanillin, at least to a low extent."
• After reviewing the technology: "In view of the considerations above, it has to be concluded that claim 1 encompasses as an embodiment recombinant non-vanillin producing strains of the order Actinomycetales. This embodiment will be dealt with in the following under inventive step."
• "the provision of an alternative recombinant strain with at least one non-functional vr1 to vr5 gene does not amount to more than an arbitrary choice from a number of different equal solutions, i.e. the provision of further recombinant Actinomycetales strains comprising at least one non-functional gene, each of which would be obvious to the skilled person."
• Claim 1 is considered to be obvious.
• In Auxiliary Request 13, the strain is limited to one particular strain (producing vanillin).
• "New auxiliary requests 12 and 13 were filed for the first time at the oral proceedings before the board. The respondent argued in support of their admittance that the amendments were a reaction to the board's communication and that the amended claims 1 of both claim sets were derived from the other claims as granted, in particular, from claim 12 as granted for auxiliary request 12 and from claim 3 as granted for auxiliary request 13. "
• " However, the submission of auxiliary requests 12 and 13 only at the oral proceedings as a reaction to objections that were on file since the first instance proceedings cannot represent exceptional circumstances that could justify this late reaction. These objections were also maintained by the appellant in their statement of grounds of appeal. Since therefore the objections were not brought up by the board, the submission of these new auxiliary requests cannot be justified as a reaction to the board's preliminary opinion either. In addition, procedural economy could also not provide any reason for the respondent not to file auxiliary requests 12 and 13 at an earlier stage. The issue of whether or not the appellant was taken by surprise does also not relate to the question whether exceptional circumstances have prevented the respondent from filing auxiliary requests 12 and 13 earlier, and is thus irrelevant as well."

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t211799eu1